IN RE DINSMORE (Fed. Cir. 2014) (P) – Terminal disclaimers not generally rescindable via reissue

by Steve Driskill | Jun 10, 2014 | [sub] reissue, PTO Procedure

Although the court specifically noted that it “need not address broader questions about the intersection of reissue standards and terminal disclaimers,” at least in cases as here where an applicant knowingly and intentionally files a terminal disclaimer for patents...

Q. I. PRESS CONTROLS v. LEE (Fed. Cir. 2014) (P) – Proactive arguments against non-asserted rejections on appeal

by Steve Driskill | Jun 9, 2014 | [sub] appellate, PTO Procedure

The Board has been encouraged here by the Federal Circuit to review the examiner’s rejections for consistency and make independent rejections based at least on the art before it where appropriate. Depending on how this plays out, it may make sense to proactively argue...

NASSAU PRECISION CASTING v. ACUSHNET COMPANY, INC. (Fed. Cir. 2014) (NP) – Methods of product design

by Steve Driskill | Jun 6, 2014 | [sub] claim context, Claim Interpretation

Method claims may encompass not only methods of manufacture but also other types of processes, including those performed by a designer of a new product, and therefore must be read reasonably to determine the appropriate context and corresponding actors covered....

IN RE REIJERS (Fed. Cir. 2014) (NP) – Inherent anticipation for a different purpose

by Steve Driskill | Jun 5, 2014 | [sub] inherency, Anticipation

Inherent disclosure may serve as a basis for a finding of anticipation even if the prior art does not contemplate using its teachings for specifically the same purpose as the claimed invention. Background / Facts: The application on appeal here from rejection at the...

IN RE RAMBUS, INC. (Fed. Cir. 2014) (P) – Incidental operation of the prior art under contrived circumstances

by Steve Driskill | Jun 4, 2014 | [sub] broadest reasonable interpretation, Claim Interpretation

Incidental operation of a prior art element under only limited and contrived circumstances does not necessarily teach or suggest a claim element intentionally configured for such operation. Background / Facts: The patent on appeal here from rejection during...